• Sony Corporation v. Cascades Projection LLCAll claims unpatentable
  PTAB · Jan 11, 2017 · IPR2015-01846 · APJ Thomas L Giannetti · IPR · Final written decision

  Claims 29, 30, 32, and 33 are unpatentable as anticipated by Fushimi; claim 47 by Goldenberg; and claims 48 and 69 as obvious over Goldenberg with Mitsutake or Sato.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “II. ANALYSIS A. Level of Ordinary Skill Petitioner describes the level of skill in the art as follows: The level of ordinary skill in the art of display systems in 1994 would have been that of a person with: (1) a bachelor’s degree in optics or optical engineering and two years of experience working with the optical engineering of display or related optical systems; (2) a bachelor’s degree in physics, electrical engineering, mechanical engineering, or equivalent and three years of experience working with the optical engineering of display or related optical systems; or (3) an advanced degree in one of the disciplines identified above in (1) and (2) and one year of experience working with the optical engineering of display or related optical systems. Pet. 15 (citing Ex. 1015, Declaration of Alan E. Willner, Ph.D. (“Willner Decl.”) ¶ 114). The definition presented by Mr. Bohannon, Patent Owner’s expert, is similar, but apparently would require specific experience designing or building a display system or projector. Ex. 2011 (“Bohannon Decl.”) ¶¶ 12–13; Ex. 1019 (“Bohannon Dep.”) 48:20–49:17. Although we agree with Petitioner that specific design experience on commercial projectors would not be required (Pet. Reply 4), we are satisfied that Petitioner’s formulation, requiring experience “working with the optical engineering of display or related optical systems,” includes design activities, and is, therefore, sufficient. Consequently, we adopt Petitioner’s definition of the level of skill in the art.” slip op. at 6

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Corresponding structure / algorithm (indefinite if none)Term construed petitioner constructionDecided for petitioner

    “We are persuaded from Figure 69 itself, and the descriptions of lens array 6930 in the ’347 patent, that a person of ordinary skill would identify that lens array with the claimed function “focusing different segments of a light beam emanating from said light source onto said element at proper angles such that light is focused onto the pixels of said element.” As discussed supra, the purpose of having a lens array is to focus light into the pixel holes. See Linear Tech. Corp. v. Impala Linear Corp. 379 F.3d 1311, 1322 (Fed. Cir. 2004): Contrary to Maxim’s argument, and the district court’s conclusion on summary judgment, PWM circuits are not excludable from the corresponding structure for failing to reference a specific structure . . . . Although the expression “PWM circuit” does not reference a specific circuit structure, persons of skill in the art would understand that “PWM circuit” references a discrete class of circuit structures that perform known functions. That the disputed term is not limited to a single structure does not disqualify it as a corresponding structure, as long as the class of structures is identifiable by a person of ordinary skill in the art. Thus, the ’347 patent specification describes the function of the input lens array arrangement in Figure 69 in terms that identify it with the claimed focusing means: “All light goes between pixel holes and none is focused into spaces between pixels.” Ex. 2001, col. 51, ll. 10–11. Furthermore, we agree with Petitioner’s analysis that input lens array 6930 performs the claimed function of focusing segments of a light beam into the pixel holes of element 6940 at a proper angle, such that light is not wasted. Pet. Reply 2. This is apparent from the figure itself, the description quoted supra, and the credible testimony from Dr. Wilner. Willner Decl. ¶¶ 196– 206.” slip op. at 15

  • Claim Construction › Intrinsic evidence (Phillips canons) › Prosecution history disclaimer / disavowalDisclaimer not foundDecided for petitioner

    “light tunnel” during prosecution is neither a disavowal nor a disclaimer. Pet. Reply 14. We agree for at least the following reasons. “[T]he doctrine of prosecution disclaimer only applies to unambiguous disavowals.” Grober v. Mako Prods., Inc., 686 F.3d 1335, 1341 (Fed. Cir. 2012) (citation omitted). We find that the prosecution record cited by Patent Owner in this case does not meet this test. Patent Owner refers to an argument made to the Examiner distinguishing a reference (Faris). PO Resp. 26–27; Ex. 2009, 19. Patent Owner described these structures in Faris as “light pipes,” i.e.,“fluorescent, tube-shaped lights with light reflective mounts.” Ex. 2009, 18. Patent Owner does not explain how distinguishing Faris’s “light pipes” amounts to a disclaimer or disavowal of a light tunnel or concentrator with an enclosed light source. See Pet. Reply 14. Patent Owner further described a light tunnel as “a tube.” Ex. 2009, 18. As discussed in our Institution Decision, referring to a light tunnel as a “tube” does not necessarily mean it is open at both ends. See Institution Decision 17 (referring to a tube of toothpaste). We, therefore, are not persuaded that the restrictions on this means-plus-function element suggested by Patent Owner should be adopted. We will, however, further discuss this limitation infra in connection with Goldenberg.” slip op. at 18

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed petitioner constructionDecided for petitioner

    “We agree that the record shows the terms “Fresnel” and “polarizer” have customary meanings in the art, as Petitioner asserts. We agree, also, that both the ’347 patent specification and the April 1995 article demonstrate that a Fresnel polarizer, by itself (i.e., without additional elements), is not a polarization converter. For at least the foregoing reasons, we agree with Petitioner that further limitations to the term Fresnel polarizer, as proposed by Patent Owner, are unwarranted, and adopt Petitioner’s reasoning that a person of ordinary skill familiar with Fresnel lenses and polarizers would understand the term Fresnel polarizer as a polarizer constructed with stepped, sawtooth-like elements so as to have the optical properties of a much thicker polarizer. Pet. 17–20; Willner Decl. ¶¶ 178–184.” slip op. at 21

  Patent outcomesUS 7,688,347 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,688,347
• HTC Corporation / HTC America, Inc. v. Parthenon Unified Memory Architecture LLCAll claims unpatentable
  PTAB · Jan 4, 2017 · IPR2015-01501 · APJ James B Arpin · IPR · Final written decision

  Claims 1–4 are unpatentable under § 103 as obvious over Bowes and MPEG, with Stearns for claim 3 and Shanley for claim 4.

  RulingsFinal written decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “Pet. vi–vii. Patent Owner filed a Preliminary Response (Paper 7). On January 6, 2016, we issued an Institution Decision (Paper 12, “Inst. Dec.”), instituting inter partes review on the following grounds: References Basis Claim(s) challenged Bowes and MPEG 35 U.S.C. § 103(a) 1 and 2 Bowes, MPEG, and Stearns 35 U.S.C. § 103(a) 3 Bowes, MPEG, and Shanley 35 U.S.C. § 103(a) 4” slip op. at 3

  • RehearingRehearing, deniedDenied

    “After institution, Petitioner filed a Request for Rehearing (Paper 14), which we denied (Paper 17), seeking reconsideration of our denial of institution of review with respect to claims 7–10 and 12. Patent Owner then filed a Patent Owner Response to the Petition (Paper 21, “PO Resp.”), and Petitioner replied (Paper 32, “Reply”). A hearing for the instant proceeding and related Cases IPR2015-01500 and IPR2015-01502 was held on September 19, 2016. A transcript (Paper 52, “Tr.”) of that hearing is included in the record.” slip op. at 3

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “Neither Petitioner nor Patent Owner offers other constructions of any claim term in the challenged claims. See Pet. 8–11. Only terms which are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (explaining that “claim terms need only be construed ‘to the extent necessary to resolve the controversy’” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999))). For purposes of this Final Written Decision, no claim terms require express construction.” slip op. at 9

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “3 Petitioner proposes an assessment for a person of ordinary skill in the art. Pet. 11 (citing Ex. 1030 ¶¶ 78–81); see Ex. 2009 ¶ 24. Patent Owner’s declarant, Dr. Thornton, proposes an alternative assessment for a person of ordinary skill in the art. Ex. 2009 ¶ 25. Nevertheless, Dr. Thornton testifies that “my analysis and conclusions would remain unchanged” regardless of which assessment is applied. Id. ¶ 26; see Tr. 40:8–42:11, 76:20–77:9. To the extent necessary and for purposes of this Final Written Decision, we adopt Petitioner’s assessment, which each party’s declarant meets or exceeds. See Ex. 1030 ¶¶ 2–6; Ex. 2009 ¶¶ 5–11. 4 Patent Owner does not contend in the Patent Owner Response that such secondary considerations are present. See Paper 13, 6 (“Patent Owner is cautioned that any arguments for patentability not raised in the response will be deemed waived.”). 5 There is no requirement to enumerate each Graham factor and to include findings specifically in terms of the factors as long as “the required factual determinations were actually made and it is clear that they were considered while applying the proper legal standard of obviousness.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988).” slip op. at 10

  Patent outcomesUS 7,777,753 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR · Graham
  Patents in suitUS 7,777,753
• HTC Corporation / HTC America, Inc. v. Parthenon Unified Memory Architecture LLCAll claims unpatentable
  PTAB · Jan 4, 2017 · IPR2015-01500 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–3, 5, 7, 13–15, 17–21, and 23–25 are unpatentable under § 103 based on the instituted combinations.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “As a result, we construe the claims in accordance with the principles followed in district court. See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b); see Toyota Motor Corp. v. Cellport Sys., Inc., Case IPR2015-00633, slip op. at 8–10 (PTAB Aug. 14, 2015) (Paper 11); cf. In re Rambus Inc., 694 F.3d 42, 46 (Fed. Cir. 2012) (“While claims are generally given their broadest possible scope during prosecution, the Board’s review of the claims of an expired patent is similar to that of a district court’s review.”) (internal citation omitted). Moreover, Petitioner argues that its proposed construction will remain the same even if we apply the principles set forth in Phillips. Pet. 11 (stating that “the constructions proposed herein are consistent with both [the Phillips standard and the broadest reasonable interpretation standard]”). In our Decision on Institution, we construed “decoder” to mean “hardware and/or software that translates data streams into video or audio information.” Inst. Dec. 8–9. Neither party disputes our determination or proposes additional terms for construction. Based on the record developed during this proceeding, we continue to apply this construction.” slip op. at 7

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “On the record before us, therefore, we are persuaded that Petitioner has provided an articulated reasoning with some rational underpinning sufficient to support the legal conclusion of obviousness. See KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).” slip op. at 21

  • Expert testimonyPetitioner expert creditedDecided for petitioner

    “We credit the testimony of Dr. Stone, however, that a person of ordinary skill in the art would have had no reason to use a cache to hold image data because such a system would “not guarantee that you could retrieve it” (Ex. 2006, 159:22–23), and that, even if one did, the image data “will also be backed up to main memory” (id. at 163:22–23). See also Stone Reply Decl. ¶ 32 (“[I]f you stored the data in the DSP cache, you could not reliably retrieve it from the cache because it could have been evicted from the cache when you attempted to retrieve it at a later time.”). Moreover, Patent Owner’s contention that a person of ordinary skill in the art would have had reason to modify the teachings of Bowes’s DSP 20 to include a dedicated image memory is contrary to the stated purpose of Bowes, which is to eliminate a block of dedicated SRAM.” slip op. at 14

  Patent outcomesUS 7,321,368 unpatentable
  Claim construction§ 103 obviousnesscites Phillips · KSR
  Patents in suitUS 7,321,368
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentable
  PTAB · Dec 1, 2016 · IPR2015-01232 · APJ James B Arpin · IPR · Final written decision

  Claims 1, 6, 7, 14, and 16 are unpatentable as obvious over Shimada, including the obviousness-based modifications to its lookup table and photometry teachings.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “construction. Tr. 8:4–15; see also id. at 14:16–15:2 (no need to construe “preparatory power value”). Patent Owner agreed, also stating at the hearing that no claim constructions are necessary. Id. at 19:11–25; see PO Resp. 12 (relating to the claim term “interface”); Tr. 50:19–55:4. Nevertheless, Petitioner notes that the parties appear to disagree regarding the plain and ordinary meaning of the term “weighting.” PO Resp. 16–18; see Pet. Reply 15; Tr. 8:9–15. Petitioner argues that “weighting” means “‘according more weight,’ emphasizing, ‘an area of interest of the image,’ or even emphasizing the entire image.” Pet. Reply 16 (citing Ex. 1001, col. 2, ll. 15–17, col. 9, ll. 1–3; Ex. 2003, 62:10–13); see Tr. 8:24–25 (“according more weight or emphasizing a portion or all of an image”). Patent Owner does not propose expressly an alternative construction, but, in attempting to distinguish the teachings of Shimada, contends implicitly that Petitioner’s construction is overly broad. PO Resp. 18; see Pet. Reply 15 (“Though PO never actually proposes an actual construction for ‘weighting,’ it argues Shimada uses a ‘selection process’ and suggests that, in contrast, the claimed ‘weighting’ must be performed numerically.” (citations omitted)). We find Petitioner’s proposed construction to be consistent with the Specification of the ’029 patent, and we construe “weighting” to mean “according more weight or emphasizing a portion or all of an image.” Nevertheless, only terms that are in controversy in this proceeding need to be construed, and then only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999). Because the resolution of this controversy does not depend upon the construction of any other claim term, no other claim terms are construed expressly.” slip op. at 9

  • Skill levelSkill level patent owner adoptedDecided for patent owner

    “5 Petitioner proposes an assessment of the level of skill for a person of ordinary skill in the art. Pet. 15–16 (citing Ex. 1033 ¶ 20). Patent Owner’s declarant proposes a slightly different and somewhat lower (e.g., two years, instead of four years, of industry experience) assessment of the level of skill for a person of ordinary skill in the art. Ex. 2004 ¶ 26. To the extent necessary and for purposes of this Final Written Decision, we adopt Patent Owner’s declarant’s assessment, which each party’s declarant meets or exceeds. See Ex. 1033 ¶ 21; Ex. 2004 ¶ 27. 6 There is no requirement to enumerate each Graham factor and to include findings specifically in terms of the factors as long as “the required factual determinations were actually made and it is clear that they were considered while applying the proper legal standard of obviousness.” Specialty Composites v. Cabot Corp., 845 F.2d 981, 990 (Fed. Cir. 1988).” slip op. at 11

  • Expert testimonyPetitioner expert creditedPatent owner expert discountedDecided for petitioner

    “As discussed above (see supra Section IV.A.3.a.i.), Mr. Parulski explains that “Shimada takes a binary approach (either counting an area or discounting an area), utilizing the central four areas of the image in the calculation and ignoring the remainder.” Ex. 1033 ¶ 92 (citing Ex. 1005 ¶ 50). Thus, for example, the four (4) center areas may be weighted one (1), and the sixty (60) surrounding areas may be weighted zero (0). See Ex. 2003, 62:18–63:4, 78:19–84:1; see Pet. Reply 17–18. Shimada discloses “uniform” weighting (Ex. 1001, col. 8, l. 60–col. 9, l. 3), and Mr. Parulski explains that uniform weighting equally weights all areas (see, e.g., Ex. 2003, 171:13–20). See Pet. Reply 18–19. Mr. Parulski testifies that this is how Shimada operates when performing photometry uniformly on all 64 areas of Figure 4. See, e.g., Ex. 2003, 69:10–70:22; see also Ex. 1005 ¶ 50 (“[W]hen the photographic subject is in a normal state other than a backlit state, photometry is performed for a wider area.”); but see Ex. 2004 ¶¶ 42–47. We credit Mr. Parulski’s testimony here. Thus, we are persuaded that Shimada teaches “weighting” as that term is here construed. In its Figure 4, reproduced above (see supra Section IV.A.2.), Shimada further depicts a square imaging element measuring eight “areas” on a side and totaling sixty-four (64) areas. As noted above, Petitioner argues persuasively that Shimada teaches assigning numerical values to each of these areas. Pet. Reply 19 (citing Ex. 2003, 69:10–70:22). Further, Mr. Parulski testifies that: Shimada further describes that “the size of the photometric area substantially may be selected by processing only the signals of the required photometric area.” [Ex. 1005 ¶ 50.] It would have been obvious to a POSITA that Shimada’s disclosure of “processing only the signals of the required photometric area” could advantageously be accomplished by using a memory having “luminance weighting tables” with binary values (e.g., “0” or “1”), which enable the CPU to identify the photometric areas to be included in the processing. Ex. 1033 ¶ 115; see Ex. 2003, 84:11–94:11; see also KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.”). Again, we credit Mr. Parulski’s testimony. Thus, we are persuaded that such an assignment of numerical values discloses a “weighting table,” such as that recited in challenged claim 16, and that a person of ordinary skill in the art would understand, in view of Shimada’s teachings, that such numerical values might be stored in a memory in the form of a table. Pet. 41 n.36; see Pet. Reply 19 (“Claim 16 differs from claims 1, 6 and 7 in that it requires a memory storing a “weighting table.”).” slip op. at 35

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundUnpatentable

    “power values to determine the main flash values presented in Table 1, that such values must be stored within and/or accessible to Shimada’s system, and that Shimada teaches that storage capacity was a concern in the art. Ex. 1005 ¶ 34; see Ex. 2003, 33:7–34:11, 40:9–15. Shimada expressly teaches that two of the pieces of data used to accomplish Shimada’s purpose may be stored in a single memory, ROM 16 of Shimada’s Figure 1. Ex. 1005 ¶¶ 20, 32, 42. Based on the art and arguments presented here, the record suggests a finite number of ways in which distinct pieces of data (e.g., the main flash duration and power values, the preparatory flash duration, and the preparatory flash power values) may be stored and that these would be within the technical grasp of a person of ordinary skill in the art. Ex. 2003, 44:7–45:17, 46:5–47:6; see Tr. 37:3–38:6. On this record, we are persuaded that a person of ordinary skill in the art would have understood that saving information in one file, instead of two or more files, has the ability to conserve storage space. KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”), 421 (“When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp.”); see Ex. 1005 ¶¶ 34, 35 (describing known problem of, and solutions for, storage capacity).” slip op. at 21

  Patent outcomesUS 7,092,029 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,092,029
• Samsung Electronics Co., Ltd. / Samsung Electronics America, Inc. et al. v. Imperium (IP) HoldingsAll claims unpatentable
  PTAB · Nov 30, 2016 · IPR2015-01233 · APJ Charles J Boudreau · IPR · Final written decision

  Claims 1 and 10 are unpatentable: claim 1 is anticipated by Roe and Toshiba, and claim 10 is obvious over Umeda or Sears combined with either Roe or Toshiba.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “Having considered the parties’ arguments, we agree with Samsung that the broadest reasonable interpretation of “interface” in light of the specification of the ’290 patent is “a connection used for communicating signals between two or more electrical components,” and we expressly decline to read into claims 1 and 10 requirements that the recited interfaces (1) must perform a data interfacing function “in accordance with a protocol that is recognized and implemented by both the transmitting device and the receiving device” and (2) necessarily must be “higher-level circuits,” as Imperium suggests. Id. at 2, 6–8; PO Resp. 12–13; see Hoganas AB v. Dresser Indus., Inc., 9 F.3d 948, 950 (Fed. Cir. 1993) (“It is improper for a court to add ‘extraneous’ limitations to a claim, that is, limitations added ‘wholly apart from any need to interpret what the patentee meant by particular words or phrases in the claim.’” (quoting E.I. du Pont de Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988))).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableUnpatentable

    “We are persuaded by Samsung’s arguments and evidence presented in the Petition that Roe’s dual-purpose I/O circuit discloses the “data interface circuit” of claim 1 of the ’290 patent, including single-ended and differential interfaces with selectable outputs arranged as set forth in claim 1, and neither Imperium’s arguments nor its cited evidence persuade us otherwise. See Pet. 17–25; PO Resp. 16–22. As stated in Section II.A.2 supra, we agree with Samsung that the broadest reasonable interpretation of the term “interface,” as recited in claim 1 of the ’290 patent, is “a connection used for communicating signals between two or more electrical components,” and we do not read into claim 1 any requirement that the recited interfaces must be a “higher-level circuit” that performs a data interfacing function in accordance with any particular protocol. Accordingly, we are not persuaded by Imperium’s arguments or Dr. Wright’s testimony that Roe’s I/O circuits are not “interfaces” within the meaning of claim 1. PO Resp. 16–20. We also agree with Samsung that claim 1 does not require sending the selected mode to a downstream receiver. Pet. Reply 12. Accordingly, we are not persuaded by Imperium’s argument that Roe does not describe “sending selection signals to any components on the downstream/receive-side of the output lines.” PO Resp. 21. Additionally, because we understand Samsung to rely on Roe’s “dual-purpose I/O circuit” to disclose the claimed “data interface circuit” (see Pet. Reply 12), we are not persuaded by Imperium’s argument that Roe’s “primary interface itself” does not have selectable single-ended and differential components (PO Resp. 21). c. Conclusion For the foregoing reasons, we conclude that Samsung has shown by a preponderance of the evidence that claim 1 is anticipated by Roe.” slip op. at 21

  • Obviousness (§103) › Analogous artAnalogous artDecided for petitioner

    “ordinary skill in the art, adopted in Section II.C.3.b supra, as well as the testimony of both Dr. Wright (Ex. 1040; Ex. 1046; Ex. 2008) and Dr. Baker (Ex. 1008; Ex. 1041; Ex. 2007), we are persuaded by Samsung’s arguments and evidence that it would have been within the skill of a person of ordinary skill in the art to incorporate a dual interface as taught by either Roe or Toshiba into Umeda’s image sensor. We also agree with Samsung that Umeda, Roe, and Toshiba are analogous art with respect to claim 10 of the ’290 patent. See Pet. Reply 17–18; PO Resp. 29. As Samsung points out (Pet. Reply 17), the question of whether prior art references are “analogous” is evaluated with respect to the claimed invention, not with respect to other references. See, e.g., Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) (“A reference qualifies as prior art for a determination under § 103 when it is analogous to the claimed invention.”). A prior art reference is considered to be analogous to a claimed invention if it is either: (1) from the same field of endeavor, regardless of the problem addressed; or (2) reasonably pertinent to the particular problem with which the inventor is concerned, regardless of the field of endeavor. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). In this case, we determine that Umeda is analogous art with respect to claim 10 under at least the first prong of Bigio, and that Roe and Toshiba are both analogous art under at least the second prong. In particular, Umeda generally describes solid state image sensors, including CMOS-type image sensors, that include a data interface circuit and an image processor connected to the image sensor to receive the signals output by the data interface circuit (see supra Section II.C.3.a and citations therein), which are within the same field of endeavor as the CMOS imaging apparatus of claim 10. Moreover, because each of Roe and Toshiba discloses an interface that provides selectable single-ended and differential signal output with reuse of output pins, we find that those references clearly are pertinent to the problem set forth in the ’290 patent, namely fulfilling a “need for an improved interface circuit that would allow either a single-ended or a differential output and using as few pins as possible” (Ex. 1001, 3:17–19; see also id. at 1:11–15 (“The field of the invention relates generally to the field of interface circuits, and more particularly, to interface circuitry for providing selectable single-ended and differential signal output from a CMOS image sensor to an external digital signal processor.”)).” slip op. at 37

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundDecided for petitioner

    “We are persuaded, moreover, that a person of ordinary skill in the art would have had reason in view of Umeda’s teachings, as cited by Samsung, to make the proffered combinations. See, e.g., Ex. 1006, 1:61–67 (stating the goal of “mak[ing] the most of the[] characteristic features” of a MOS type image sensor and the importance of using “an appropriate interface” to avoid increases in chip area, package size, and cost), Fig. 14 (listing both single-ended (“PC Card”) and differential (“IEEE 1394”) interface types). We conclude that the recited combination of claim 10 is no more than “the predictable use of prior art elements according to their established function,” and that a person of ordinary skill in the art would have been prompted to combine those elements in the claimed fashion. KSR, 550 U.S. at 417, 418. We, accordingly, are persuaded that Samsung has shown that the first three Graham factors weigh in favor of finding that Umeda in combination with either Roe or Toshiba would have rendered the subject matter of claim 10 of the ’290 patent obvious to one of ordinary skill in the art at the time of the invention.” slip op. at 38

  Patent outcomesUS 6,836,290 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,836,290
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Rehearing granted
  PTAB · Jul 1, 2016 · IPR2016-00326 · APJ Kevin W Cherry · IPR · Rehearing

  On rehearing, the Board instituted IPR on claims 1, 2, and 13 based on anticipation by Anderl and obviousness over Anderl or Anderl and Hendry.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted

    “On June 17, 2016, Patent Owner filed a Request for Rehearing (Paper 13, “Request” or “Reh’g Req.”) of our Decision to Institute (Paper 10, “Decision”) an inter partes review in this case. We have reviewed Patent Owner’s Request, and we agree that we overlooked the matters identified in the Request. See Reh’g Req. 2–4. Thus, for the reasons stated in the Request, we grant Patent Owner’s Request for Rehearing. On rehearing, we withdraw our previous Decision and reconsider our Decision in light of the full record, as Patent Owner requests. Id. at 4. Pursuant to this reconsideration, we issue the instant Amended Decision to Institute.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “determine that the information presented shows there is a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of at least one of claims 1, 2, and 13 (“the challenged claims”) of the ’537 patent.” slip op. at 2

  • BurdenOther

    “limitation, we are persuaded that Petitioner has shown adequately that Anderl discloses “said appended information featuring said at least one associated type of permission for accessing the stored data,” as recited in claim 1. Patent Owner focuses narrowly on the value of the data included in protection bytes 43 to 45 of Anderl. See Prelim. Resp. 13–15. Yet the claim does not focus only on the data alone, but instead recites “appended information.” As the Petition explains, Anderl discloses that the information is appended based on location in file as the value at the particular location. See Pet. 23–24. In particular, Anderl discloses that each file includes prefix section 41 that is located in the first record of each file and contains file identification number 42 and protection bytes 43, 44, and 45. Ex. 1005, 6:57–60. Anderl states that “[t]he protection bytes 43 through 45 specify the file permissions.” Id. at 6:65–66 (emphasis added). As Anderl discloses,” slip op. at 20

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed board ownDecided for petitioner

    “not persuaded that “type of permission” is limited to only the type of action that can be performed, e.g., reading or writing, with respect to the data. Instead, the Specification repeatedly refers to the “types of permissions” as “for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.” See, e.g., Ex. 1001, Abstract (“The device, method and system enable various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 2:32–36 (“The present invention enables various types of permissions to be set for determining access to the stored data, such that if an attempt is made to access particular data which does not have a suitable permission type, access is denied.”); 3:4:26–30 (same). Given this broader usage in the Specification, for purposes of this decision, the “type of permission” is for determining access to the stored data, such that if an attempt is made to access particular data that does not have a suitable permission type, access is denied. The access, if not denied, may include reading from or writing to the stored data. As for “featuring,” we are not persuaded that “featuring,” as used in claim 1 of the ’537 patent is synonymous with “represent,” as Patent Owner contends. A relevant meaning of “featuring” is “to be an important part or aspect of something.” See Ex. 3001. This meaning only requires that the thing that is featured be an important part or aspect, not that it correspond to or represent the thing. Patent Owner does not point us to any disclaimer or definition that would limit this meaning. See Prelim. Resp. 13–15. Instead, the Specification appears to use the related term “feature” in this ordinary sense. See, e.g., Ex. 1001, 4:54–56 (“As another option, the device may feature a single chip with a microprocessor and firmware for operating the data access features ….”); 5:25– 27 (“A system 10 features a CPU 12 for executing instructions….”); 8:15–19 (“For example, an access control code could be implemented with a combination of different types of data, each of which could again feature a separately selected and assigned data access permission, which optionally and preferably is different for each portion of the data.”). Moreover, the portion of Specification cited by Patent Owner (Prelim. Resp. 12–13 (citing Ex. 1001, 6:34–61)) makes clear that it only refers to a preferred embodiment and the permissions do not need to be stored as a “code,” i.e., specific information or data representing the permission. See id. at 6:35–36 (“According to preferred embodiments…”), 6:43–47 (“If such a permission is to be stored in an abbreviated code, the code for this particular type of permission could be given as ‘R/W/WP’, for example. Such a code could optionally be stored in the non-volatile 16, for example.” (emphases added)). Such optional language is not sufficient to limit the claimed “appended information” to only something that “represents” the permission, such as a code. See Prolitec Inc. v. Scentair Techs., Inc., 807 F.3d 1353, 1358 (Fed. Cir. 2015) (“[T]he use of ‘may’ signifies that the inventors did not intend to limit [the claim]. . . .”); Ancora Techs., Inc. v. Apple, Inc., 744 F.3d 732, 735 (Fed. Cir. 2014) (noting that non-limiting examples are not sufficient to redefine a term).” slip op. at 8

  Claim construction§ 102 anticipation§ 103 obviousness
  Patents in suitUS 6,324,537
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Institution denied
  PTAB · Jun 24, 2016 · IPR2016-00325 · APJ James B Arpin · IPR · Institution

  The Board denied institution for claims 42–44 because the petition did not show a reasonable likelihood of prevailing on any asserted anticipation or obviousness ground.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsInstitution denied

    “inter partes review of claims 42–44 of U.S. Patent No. 7,000,063 B2 (Ex. 1001, “the ’063 patent”) under 35 U.S.C. §§ 311–319. Paper 1 (“Petition” or “Pet.”). Innovative Memory Systems, Inc. (“Patent Owner”), filed a Preliminary Response. Paper 9 (“Prelim. Resp.”). Under 35 U.S.C. § 314, an inter partes review may not be instituted “unless . . . the information presented in the petition . . . shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” For the reasons set forth below, we deny institution of an inter partes review of any of claims 42–44 of the ’063 patent.” slip op. at 2

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed patent owner constructionDecided for patent owner

    “2. “write-once memory cells” (Claims 42–44) Patent Owner contends that the term “write-once memory cells” means “memory cells to which data can be written only once.” Prelim. Resp. 7 (emphasis added). Petitioner does not propose a construction for this term. See Pet. 9–12.” slip op. at 7

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “Patent Owner contends that Kasa does not disclose the “rendering” step of claim 42. Prelim. Resp. 15–17. In particular, Patent Owner contends that Kasa does not disclose causing a write-many memory cell to become a write-once memory cell. Id. at 15–16. Instead, Patent Owner contends that “Kasa merely discloses causing a write-many memory cell to become a read- only memory cell, i.e., a memory cell to which data can no longer be written,” after the data to be protected has been written to the write-many OTP sector. Id.; see Ex. 1005, col. 11, ll. 27–30 (“As set forth above, when the OTP sector write-protect CAM 34 is in the programmed state, the OTP sector 26 can only be used as a read-only sector.” (emphasis added)).” slip op. at 12

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “3. Analysis of Challenge to Claim 43 Claim 43 depends directly from independent claim 42 and recites the method of claim 42 “wherein the memory device comprises a modular memory device that is removabl[y] couplable [with] a host device.” Ex. 1001, col. 10, ll. 33–35; see id., Certificate of Correction. Petitioner argues that Dipert teaches the additional limitations of claim 43 and that a person of ordinary skill in the art would have reason to combine the teachings of Kasa with those of Dipert to achieve the method recited in claim 43. Pet. 25–28. However, Petitioner relies solely on the teachings of Kasa to supply the limitations of independent claim 42. Id. at 27. Patent Owner contends that, because Kasa fails to disclose each and every element of claim 42, Kasa also fails to teach or suggest the limitations of dependent claim 44. See Prelim. Resp. 18. In view of our analysis of the arguments with respect to claim 42 (see supra Section II.B.3.a.), we agree with Patent Owner. Consequently, on this record, we are persuaded that Petitioner fails to demonstrate a reasonable likelihood of prevailing in showing that Kasa and Dipert render claim 43 of the ’063 patent obvious.” slip op. at 17

  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,000,063
• LG Electronics, Inc. v. Ati Technologies UlcAll claims unpatentable
  PTAB · Jun 23, 2016 · IPR2015-00321 · APJ Brian J Mcnamara · IPR · Final written decision

  Claim 18 is unpatentable under § 103 over Hatanaka alone and over Hatanaka combined with O’Connor.

  RulingsFinal written decision

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITAPlain and ordinary meaningDecided for petitioner

    “stored, from the third mode, in which a portion, i.e., a second portion of the first program is stored. PO Resp. 13–16; see Tr. 22:19–24:23. The claim language does not define a program or program portion. The specification refers to time shifting a “viewed program,” states that PES packets from various ES are merged together to form a program (service) with its own STC, and states that all ES components of a program are synchronized with the STC counter to indicate the proper timing of each ES. Ex. 1001, col. 1, ll. 12–13, col. 2, ll. 7–13. However, a program is not defined by any limitations of time or content. Thus, neither the language of claim 18 nor the description in the specification of the ’945 Patent places specific constraints on what constitutes a program or a portion of a program. In the first and second modes in claim 18, the first program is selected and decoded or stored, respectively. The distinction in the third mode of claim 18 is that the first program portion is that portion of the first program that is stored and whose video is provided to the second demultiplexer to select a portion of the first program portion for display; the second program portion is that portion of the first program that is being stored at the same time the video portion of the first program portion is being decoded for display. Patent Owner’s claim construction argument that there would be no need for the third mode if the entire program were recorded applies only when there is no time shifting, i.e., when at all times the first program portion being stored and provided to the second demultiplexer for decoding is the same as the second program portion being stored. However, at all other times, the third mode is required to provide a time shift between the overlapping parts of the first program portion stored (the video portion of which is decoded at the second demultiplexer) and the second program portion being stored simultaneously with the decoding. Under Patent Owner’s construction, claim 18 would not apply to a system that continues to record when a user called away before the beginning of a program activates the third mode and does not return until after the entire program has been completed. In the absence of specific definitions, claim 18 does not preclude the second program portion from overlapping the entirety of the first program or the first program portion, as would occur when a user, who is called away at the beginning of a first program, activates the third mode for the duration of the first program. Indeed, some overlap of the first program portion, and the second program portion is required for the third mode to provide time shifting. We construe only those claim terms that require analysis to conduct our review. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (holding that “only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy”). For the reasons discussed further herein, we determine that our analysis does not require the express construction of other terms, and we decline to provide constructions beyond those provided in our Decision to Institute. See Dec. to Inst. 6–7.” slip op. at 5

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)UnpatentableUnpatentable

    “As noted above, Petitioner does not argue that Hatanaka expressly discloses simultaneous storing and decoding. Reply 12. Instead Petitioner asserts this feature would have been obvious to one of ordinary skill because Hatanaka discloses a system that allows a person to record and decode simultaneously different portions of the same program. Id. Petitioner supports this argument by noting that Hatanaka discloses it can employ other forms of video recording devices, and that Patent Owner’s expert, Dr. Mangione-Smith, acknowledges that one of ordinary skill would know how to replace Hatanaka’s digital VCR with other recording devices available at the time, such as a multi-head VCR, optical disk or semiconductor memory. Reply 14–15 (citing Mangione-Smith Tr. 92:3– 10). According to Petitioner, systems using multi-head VCRs and other storage devices would work in the system disclosed by Hatanaka and would accommodate simultaneous recording and playback of video data. Id. at 14 (citing Schonfled Decl. 2 ¶¶ 12–17). On this point, Petitioner further notes that the ’945 Patent itself discloses using multi-disk drive units to reduce latencies. Id.; Ex. 1001, col. 4, ll. 66–67. Thus, Petitioner has demonstrated that a person of ordinary skill would have reason to apply Hatanaka to devices that record a second portion of a first program at the same time a first portion of that program is being decoded for display. Petitioner also disputes Patent Owner’s contentions concerning the need for extensive modifications to Hatanaka to meet the limitations of claim 18. Reply 15–16. Claim 18 does not recite any particular structure to carry out the claimed method. For an obviousness analysis, prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art.” In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour, 571 F.2d 559, 562 (CCPA 1978)). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968). Petitioner notes that a person of ordinary skill would recognize that the switches of Hatanaka could be operated at frequencies that would permit simultaneous recording and playback, or that output from both data clock 45 and fixed clock 46 could be provided directly to packet controller 18 and/or synchronized using a phase locked loop, thus eliminating the need for switch 25. Pet 16; Schonfeld Decl. 2 ¶ 18. Although Patent Owner argues that these are significant modifications to Hatanaka (Mot. For Observations 3), Petitioner notes that any of the ways Dr. Schonfeld mentions for simultaneous recording and playback could be done with the same circuit, as in Figure 1 of Hatanaka (Resp. to Motion for Observations 3). Although it appears that some modifications would be required, in the context of method claim 18, which is not limited to any specific structure, Petitioner’s argument that such modifications would have been minor and obvious to one of ordinary skill is persuasive. Reply 16 (citing Schonfeld Decl. 2 ¶¶ 16–18).” slip op. at 14

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “It is well-established that a determination of obviousness based on teachings from multiple references does not require an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012); In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc) (noting that the criterion for obviousness is not whether the references can be combined physically, but whether the claimed invention is rendered obvious by the teachings of the prior art as a whole). In that regard, one with ordinary skill in the art is not compelled to follow blindly the teaching of one prior art reference over the other without the exercise of independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed. Cir. 1984); see also, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420–21 (2007) (stating that a person with ordinary skill in the art is “a person of ordinary creativity, not an automaton,” and “in many cases . . . will be able to fit the teachings of multiple patents together like pieces of a puzzle”). Notwithstanding Patent Owner’s attacks on the testimony of Petitioner’s expert, Dr. Schonfeld, as piecemeal (PO Resp. 52–56), Dr. Schonfeld has provided testimony consistent with Hatanaka’s disclosure that devices, other than single head magnetic tape VCRs, can be used, as discussed above (see Ex. 2008, 98:7– 18). Patent Owner acknowledges that, to the extent that Hatanaka does not disclose simultaneously recording and decoding portions of a broadcast, such an arrangement is suggested, by O’Connor. PO Resp. 48–49. As we noted above, claim 18 of the ’945 Patent is not limited to a particular structure; nor does the ’945 Patent disclose a structure other than a single block diagram (Figure 6) the slip op. at 18

  Patent outcomesUS 7,095,945 unpatentable
  Claim construction§ 103 obviousnesscites KSR
  Patents in suitUS 7,095,945
• Micron Technology, Inc. v. Innovative Memory Systems, Inc.Institution denied
  PTAB · Jun 13, 2016 · IPR2016-00324 · APJ Karl D Easthom · IPR · Institution

  The Board denied institution for claims 1, 2, 4, 5, 9–11, and 15–17 because it could not determine the scope of two module limitations needed to assess the obviousness grounds.

  RulingsInstitution decision

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Institution denied meritsDenied

    “If the scope and meaning of the claims cannot be determined without speculation, the differences between the challenged claims and the prior art cannot be ascertained. BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) and reasoning that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption as to the meaning of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 8

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) appliesDecided for petitioner

    “Petitioner’s contention that 35 U.S.C. § 112 ¶ 6 governs the term “error correction module” is persuasive. Contrary to Patent Owner’s arguments, nothing in the claims or the ’212 patent Specification indicates that a skilled artisan would recognize “error correction” or “error correction module” as a name for structure. See Rodriguez, slip op. at 22–23. The term “error correction” signifies the function of correcting errors, as performed by some type of hardware or algorithm working with a special computer processor. See Ex. 1001, 10:34–38, 10:62–11:5 (briefly describing functionality involving flexible error correction codes depending on the host’s capability and the NAND memory device’s reliability). The ’212 patent Specification also indicates that the claimed controller and ECC module applies to “future . . . NAND devices . . . expected to be less reliable than current . . . devices and to require a much stronger ECC capability.” Ex. 1001, 6:57–59; see also id. at 7:30–39 (describing “ongoing need . . . [to] provide compatibility between a host device . . . and successive generations of NAND flash memory devices”). According further to the Specification, the acronym “ECC” stands for “Error Correction Codes”––– indicating that error correction requires some type of coding (via ECC module 132). See Ex. 1001, 4:61–63; Fig. 5A.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsDecided for petitioner

    “II. ANALYSIS A. Patent Owner’s 35 U.S.C. § 325(d) Arguments Patent Owner argues that the Petition should be denied under 35 U.S.C. § 325(d), because the Examiner previously considered Sakaue during prosecution as evidenced by an Information Disclosure Statement and a “List of References Cited by Applicant and Considered by Examiner.” See Prelim. Resp. 23–24. Although 35 U.S.C. § 325(d) permits the Board to reject a petition because the same or substantially the same prior art or arguments were considered previously in another proceeding before the Office, it does not require the Board to do so. We decline to reject the Petition merely because the Examiner previously considered Sakaue. The record here presents detailed arguments and evidence related to the scope of the challenged claims, and with respect to Sakaue, not before the Examiner, and we decline to institute for other reasons as discussed below. See Pet. 4– 9, 17–19, 23–60.” slip op. at 6

  Claim constructionDiscretionary denialcites Graham
  Patents in suitUS 7,886,212
• Symantec Corp. v. Finjan, Inc.Rehearing denied
  PTAB · May 23, 2016 · IPR2015-01892 · APJ Charles J Boudreau · IPR · Rehearing

  The Board denied Finjan’s rehearing request and left in place institution on the §103(a) ground over Swimmer for claims 1, 2, 5, 6, 10, 11, 14, and 15.

  RulingsRehearing decision

  • RehearingRehearing, deniedDenied

    “an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse of discretion occurs when a “decision [i]s based on an erroneous conclusion of law or clearly erroneous factual findings, or . . . a clear error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988). “The burden of showing a decision should be modified lies with the party challenging the decision.” 37 C.F.R. § 42.71(d); Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). A request for rehearing is not an opportunity merely to disagree with the panel’s assessment of the arguments or weighing of the evidence, or to present new arguments or evidence. It is not an abuse of discretion to have performed an analysis or reached a conclusion with which Patent Owner disagrees, and mere disagreement with our analysis or conclusion is not a proper basis for rehearing.” slip op. at 3

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “in view of Patent Owner’s Preliminary Response (Paper 7, “Prelim. Resp.”), that Petitioner had demonstrated in its Petition a reasonable likelihood of prevailing in showing the unpatentability of each of the challenged claims under 35 U.S.C. § 103(a) over Swimmer. Paper 9 (“Dec. on Inst.”), 12–23. Accordingly, we instituted an inter partes review on that ground. Id. at 34. We also concluded, however, that Petitioner had not established a reasonable likelihood that it would prevail on any of the other grounds asserted, and we declined to institute an inter partes review on any other ground. Id. at 23– 34.” slip op. at 3

  • BurdenDecided for petitioner

    “function number, arg ( ... [)],ret ( ... )>”)). “In other words, the audit system and/or emulator generates audit records for the Downloadables (i.e., Downloadable security profile data) that identifies and lists functions (i.e., operations) that the Downloadables attempt to invoke,” and “[s]ignificantly, these operations identified by Swimmer’s audit system are the very same types of operations referred to by the applications related to the ‘494 patent as examples of ‘suspicious operations.’” Pet. 17–18. We understand Swimmer’s “activity data,” which, as cited by Petitioner, are each contained within an audit record, to be “Downloadable security profile data,” in the parlance of claims 1 and 10 of the ’494 patent. Moreover, as Petitioner also contends, “Swimmer further discloses that these audit records are stored in a database.” Id. at 19 (emphasis added) (cited by Dec. on Inst. 17). Based on Petitioner’s arguments regarding the recited database limitations of claims 1 and 10, we understand Petitioner to equate the aggregate collection of Swimmer’s activity data/audit records, each recorded according to a structured schema, with the recited “database.” Id. at 13, 19–20 (citing Ex. 1005, 9, Fig. 3); see also Ex. 1005, 7 (disclosing “audit system . . . securely collects system activity data” (emphasis added)).5 Consequently, we do not understand Petitioner to have taken the position that “both ‘security profile data’ and ‘database’ should be redundantly the same” or to have “conflat[ed] the ‘security profile data’ itself with the ‘database’ that stores the ‘security profile data,’” as Patent Owner suggests. Req. Reh’g 5. 5 In the Institution Decision, we state that “[a]s explained by Swimmer, the audit record includes records collected by Swimmer’s VIDES system, organized with a specific ‘canonical format’ to serve the ASAX tool.” Dec. on Inst. 23. We are persuaded on this record that Swimmer’s collection of audit records, so organized, is a database.” slip op. at 6

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Term construed board ownDecided for petitioner

    “Swimmer, the activity data/audit records generated by the VIDES system are organized with a specific “canonical format” to serve the ASAX tool. Ex. 1005, 9–10. We are persuaded on this record that the collection of activity data, so organized, constitutes a database as that term is construed both in the Institution Decision and in the Sophos case as “a collection of interrelated data organized according to a database schema to serve one or more applications.” Dec. on Inst. 11; Case IPR2015-01022, slip op. at 10 (Paper 7). Although Petitioner argued for a different interpretation of “database” in its Petition (Pet. 10–12), we remain persuaded that the arguments and evidence cited in the Petition sufficiently demonstrate that Swimmer teaches a database according to the interpretation adopted by us (see id. at 19–20 (citing Ex. 1005, 1, 2, 9, Fig. 3; Ex. 1018 ¶¶ 108–110)). Moreover, we are satisfied, on the present record, that there is no meaningful distinction between “database schema,” as recited in our interpretation of “database” (Dec. on Inst. 11), and the “structured schema” or “particular schema” referred to in the Petition to describe Swimmer’s canonical format (Pet. 13, 19).” slip op. at 8

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 8,677,494

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.